On July 27, 2012, ALJ E. James Gildea issued the public versions of Order No. 60 and Order No. 61 (both dated July 12, 2012) granting in part and denying in part Respondents’ separate motions to strike portions of the expert report by Dr. Trevor Mudge in Certain Dynamic Random Access Memory and NAND Flash Memory Devices and Products Containing Same (Inv. No. 337-TA-803).

By way of background, this investigation is based on a July 12, 2011 complaint filed on behalf of Intellectual Ventures Management, LLC, Invention Investment Fund I, L.P., Invention Investment Fund II, LLC, Intellectual Ventures I LLC, and Intellectual Ventures II LLC (collectively, “IV”), against several manufacturers, distributors, and retailers of DRAM and NAND Flash memory devices for alleged infringement of various patents.  See our September 3, 2011 post for more details.

Respondents Elpida Memory, Inc. and Elpida Memory (USA) (collectively, “Elpida”) were the first to file a motion seeking to have portions of Dr. Mudge’s report stricken.  Soon thereafter, Respondents Hynix Semiconductor America, Inc. and Hynix Semiconductor, Inc. (collectively, “Hynix”) filed a similar motion.  In light of the overlapping arguments, we address these motions and the ALJ’s responses together.

Elpida and Hynix both argued that Dr. Mudge’s report disclosed new infringement and domestic industry theories in relation to the doctrine of equivalents and that these portions of the report should thus be stricken.  The ALJ noted that IV provided “some, albeit slight, notice of their intent to pursue the doctrine of equivalents” and that Elpida and Hynix were not “unfairly surprised” by the report, denying to strike these portions of the report.

Elpida and Hynix also both argued that Dr. Mudge “improperly expanded the number of products…that Complainants assert support domestic industry.”  ALJ Gildea noted that discovery was limited to representative products, and that “if Elpida had any concerns regarding Complainants’ continued disclosures…it should have promptly raised them with the Administrative Law Judge rather than ambush Complainants at the expert report phase.”  Thus, the ALJ denied to strike these portions of the report.

In regard to additional evidence, Elpida argued that the UBM TechInsights Report relied on by Dr. Mudge was never identified or produced in discovery.  IV responded that this was a third party material and it had no control over the document, but the ALJ concluded that Elpida and the other Respondents were “prejudiced by this ‘hide the ball’ activity” and all of Dr. Mudge’s opinions relying on this report were ordered to be stricken.

The ALJ denied the remaining arguments in the motions as inappropriate.  Specifically, Elpida’s arguments that Dr. Mudge “improperly ‘reserved’ the right to supplement his report at a later time” were considered premature and unnecessary.  Hynix’s arguments that portions of Dr. Mudge’s report were deficient and therefore should be stricken were considered to be “a matter best reserved for rebuttal and for the weight that may be accorded Dr. Mudge’s opinions.”

Last, the ALJ chastised Elpida and Hynix for filing separate motions containing overlapping arguments, stating “parties with similar interests should coordinate and consolidate motion practice to the extent practicable.”